Claims and Continuations Final Rule

1

• Claims and Continuations Final Rule

2
Background

• In January of 2006, the Office proposed rule
  changes to practice for
• Continued examination filings
• Patent applications containing patentably
  indistinct claims and
• Examination of claims in patent applications.
• The goal is to improve quality and enhance
  efficiency in the patent examination process.

3
Background

• The Office provided an extended comment period to
  ensure that the public would have sufficient time
  to submit written comments on the proposed
  changes.
• The Office also conducted town hall meetings and
  presentations at various locations in the United
  States.

4
Background

• The Office received over 500 written public
  comments
• From intellectual property organizations,
  companies, law firms, inventors, universities,
  and government agencies.
• The Office carefully analyzed and considered the
  public comments.
• The Office has made appropriate modifications to
  the proposed rule changes in response to the
  public comments.

5
Changes in Response to Public Comments

• Divisional applications need not be filed during
  the pendency of the initial application.
• Divisional applications may be filed in parallel
  or in series.
• Increased the number of continued examination
  filings permitted without justification.

5
6
Changes in Response to Public Comments

• Did not adopt representative claims examination
  approach.
• Changed claims threshold from 10 representative
  claims per invention to 5 independent claims and
  25 total (5/25) claims per application.
• Permits up to 15/75 claims per invention without
  justification or examination support document
  (ESD).
• Reduced ESD requirements.

6
7
Claims and Continuations Final Rule

• The Claims and Continuations Final Rule was
  published on August 21, 2007, in the Federal
  Register.
• Changes to Practice for Continued Examination
  Filings, Patent Applications Containing
  Patentably Indistinct Claims, and Examination of
  Claims in Patent Applications, 72 FR 46715
  (August 21, 2007) (final rule).
• The final rule is available on the USPTO web site
  at http//www.uspto.gov/web/offices/pac/dapp/opla/
  presentation/clmcontfinalrule.html.
• The effective date is November 1, 2007.

8

• Overview of
• Claims and Continuations Final Rule

9
Continued Examination Filings 37 CFR 1.78(d) and
1.114

• Applicants may file, without a petition and
  showing
• Two continuation or continuation-in-part (CIP)
  applications and
• A single request for continued examination (RCE)
  in an application family.
• An application family includes the initial
  application and its continuation or CIP
  applications.
• An applicant may file two continuation or CIP
  applications regardless of whether an RCE has
  been filed.
• Applicant may file any additional continuing
  application or RCE with a petition and showing.

10
Continuing Applications 37 CFR 1.78(d)

• Applicants may file a divisional application if
• The prior-filed application is subject to a
  requirement for restriction and
• The divisional application claims only a
  non-elected invention(s) that has not been
  examined.
• Applicants may file divisional applications in
  parallel or in series.
• A divisional application is not required to be
  filed during the pendency of the initial
  application, as long as the copendency
  requirement of 35 USC 120 is met.

11
Continued Examination Filings 37 CFR 1.78(d) and
1.114

• Applicants may file, without a petition and
  showing
• Two continuation applications of a divisional
  application (but not a CIP) and
• A single RCE in the divisional application
  family.
• A divisional application family includes the
  divisional application and its continuation
  applications.
• Applicant may also file any additional continuing
  application or RCE in the divisional family with
  a petition and showing.

12
Examination of Claims 37 CFR 1.75(b)

• Applicants may present, without an ESD, up to
• Five (5) independent claims, and
• Twenty-five (25) total claims in an application
  (5/25 claim threshold).
• Applicant may present more than 5/25 claims, if
  applicant files an ESD before the first Office
  action on the merits (FAOM).

13
Examination of Claims 37 CFR 1.75(b)

• The 5/25 claim threshold does not count withdrawn
  claims.
• Applicant may provide a suggested restriction
  requirement (SRR) before first Office action or a
  restriction requirement.
• The 5/25 claim threshold does count all of the
  claims present in other copending application(s)
  having a patentably indistinct claim, but not the
  claims in issued patents.
• Applicant may present up to 15/75 claims via an
  initial application and 2 continuation or CIP
  applications prosecuted serially.

13
14
Applications Containing Patentably Indistinct
Claims - 37 CFR 1.78(f)(1)

• Applicants must identify other commonly owned
  application(s) or patent(s) that has
• An inventor in common with the application and
• A claimed filing or priority date within two
  months of the claimed filing or priority date of
  the application.

15
Applications Containing Patentably Indistinct
Claims - 37 CFR 1.78(f)(2)

• There is a rebuttable presumption that the
  application and the other application(s) or
  patent(s) contain at least one patentably
  indistinct claim,
• If the other commonly owned application or patent
  also has
• Substantial overlapping disclosure with the
  application, and
• A claimed filing or priority date that is the
  same as the claimed filing or priority date of
  the application.

16
Applications Containing Patentably Indistinct
Claims - 37 CFR 1.78(f)(3)

• For commonly owned pending applications that
  contain at least one patentably indistinct claim,
  
• The Office will treat each application as having
  the total number of claims present in all of the
  applications for determining whether each
  application exceeds the 5/25 claim threshold.
  See 1.75(b)(4).
• In the absence of good and sufficient reason, the
  Office may require elimination of the patentably
  indistinct claims from all but one of the
  applications.

17
First Action Final Practice72 Fed. Reg. 46722

• The Office proposed to eliminate first action
  final practice when it proposed allowing an
  applicant to file one continuation or CIP
  application or one RCE without a petition and
  showing.
• Since this final rule permits an applicant to
  file two continuation or CIP applications plus
  one RCE in an application family, the Office is
  retaining the first action final rejection
  practice in a continuing application or after an
  RCE.
• Applicants may guard against first action final
  rejection by seeking entry of the amendment,
  argument, or new evidence after final rejection
  under  1.116.

18
Second Action Final Practice 72 Fed. Reg.
46722-23

• A second or subsequent Office action may be made
  final, except when the action contains a new
  ground of rejection that is not
• Necessitated by an amendment of the claims,
  including an amendment to eliminate unpatentable
  alternatives
• Based on an IDS filed after a FAOM with the fee
• Based upon a double patenting rejection
• Necessitated by an identification of claims in a
  CIP application that is supported by a
  prior-filed application or
• Necessitated by a showing that a claim element is
  a means- (or step-) plus-function claim element.

19

• Examples of
• Continuing Applications and Requests for
  Continued Examination

20
Continuing Applications37 CFR 1.78(d)(1)(i)
Applicant may file two continuation or CIP
applications (parallel or serial) without a
petition and showing. For example
I
I
Initial Application A
C
Continuation or CIP B
C
C
C
Continuation or CIP C
21
Continuing Applications37 CFR 1.78(d)(1)(vi)
Applicant may file a third or subsequent
continuation or CIP application with a petition
and showing. For example
I
Initial Application A
I
C
Continuation or CIP B
C
C
Continuation or CIP C
C
Continuation or CIP with a petition and showing
P
P
22
Request for Continued Examination 37 CFR 1.114(f)
Applicant may file a single RCE in an application
family, without a petition or showing. For
example
I
I
Initial Application A
C
R
RCE
C
C
Continuation or CIP B
R
Continuation or CIP C
C
23
Request for Continued Examination 37 CFR 1.114(g)
Applicant may file a second or subsequent RCE
with a petition and showing. For example
I
Initial Application A
C
Continuation or CIP B
Continuation or CIP C
C
First RCE
R
RCE with a petition and showing
P
24
Divisional Applications
For example the initial application discloses
and claims inventions X, Y, and Z the
application is subject to a 3-way restriction
requirement and applicant elected invention X
for examination in the initial application.
X Y Z
Y
Divisional Application 1 claims only invention
Y, a non-elected invention that was not
examined in in the initial application.
Z
Divisional Application 2 claims only invention
Z, a non-elected invention that was not
examined in the initial application and the
divisional application 1.
25
Divisional Applications37 CFR 1.78(d) and
1.114(f)
A divisional application is not required to be
filed during the pendency of the initial
application, as long as the copendency
requirement of 35 USC 120 is met. For example
I
Initial application A w/ restriction
requirement
C
CON or CIP B
C
CON or CIP C
RCE
R
D
Divisional application D
26
Divisional Applications37 CFR 1.78(d)(1)(ii)
Applicant may file the divisional applications in
parallel or in series. For example
I
I
C
C
D
C
D
D
D
D
27
Divisional Applications37 CFR 1.78(d)(1)(ii) and
(iii)
Applicant may file two continuation applications
(but not CIPs) of a divisional application,
without a petition and showing. For example
I
Initial application A
I
C
Continuation or CIP B
C
C
Continuation or CIP C
C
D
Divisional D
D
Continuation E
C
C
C
Continuation F
C
28
Request for Continued Examination 37 CFR 1.114(f)

• Applicant may file a single RCE in a divisional
  application family, without a petition and
  showing. For example

I
I
C
C
C
R
C
D
D
C
C
C
C
R
R
29

• Effective Date Provisions
• Effective Date November 1, 2007
• Publication Date of the Final Rule August 21,
  2007
• Compliance Date for 37 CFR 1.78(f) February 1,
  2008

30
Continuing Applications 37 CFR 1.78(a) and (d)

• The rule changes to continuing application
  practice under 1.78(a) and 1.78(d)(1) are
  applicable to
• Applications filed on or after November 1, 2007
  and
• Applications entering the national stage on or
  after November 1, 2007.
• This final rule does not impact an applicants
  ability to file continuing applications between
  August 21, 2007 and October 31, 2007.
• Including reissue applications, but not
  reexamination proceedings.

31
Transitional Practice for Continuing
Applications72 Fed. Reg. 46736-37

• Applicant may file one more continuation or CIP
  application, without a petition and showing for
  applications filed (or entered the national
  stage) before August 21, 2007.
• Any continuation or CIP application filed between
  August 21, 2007 and October 31, 2007 will be
  taken into account in determining whether an
  applicant may file one more continuation or CIP
  application.

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32
Transitional Practice for Continuing
Applications72 Fed. Reg. 46736-37

• Applicant may file one more continuation or
  CIP application on or after November 1, 2007, for
  applications filed before August 21, 2007,
  without a petition and showing. For example

I
C
C
C
C
August 21, 2007
November 1, 2007
33
Transitional Practice for Continuing
Applications72 Fed. Reg. 46736-37

• Applicant may not file one more continuation or
  CIP application on or after November 1, 2007,
  without a petition and showing if
• Applicant filed one or more continuation or CIP
  applications between August 21, 2007 and October
  31, 2007.
• Applicant may not file an extra (i.e., third)
  continuation or CIP application on or after
  November 1, 2007, without a petition and showing
  if
• Applicant filed fewer than two continuation or
  CIP applications before August 21, 2007.

33
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Transitional Practice for Continuing
Applications72 Fed. Reg. 46736-37

• Applicant may not file one more continuation or
  CIP application on or after November 1, 2007,
  without a petition and showing if applicant filed
  one or more continuation or CIP applications
  between August 21, 2007 and October 31, 2007.
  For example

November 1, 2007
August 21, 2007
C
I
C
C
P
34
35
Transitional Practice for Continuing
Applications72 Fed. Reg. 46736-37

• Applicant may not file an extra (i.e., third)
  continuation or CIP application on or after
  November 1, 2007, without a petition and showing
  if applicant filed fewer than two continuation or
  CIP applications before August 21, 2007. For
  example

November 1, 2007
August 21, 2007
I
C
P
C
35
36
Request for Continued Examination 37 CFR 1.114

• The rule changes to RCE practice under 1.114
  are applicable to
• Any RCE filed on or after November 1, 2007.
• Any RCE filed on or after November 1, 2007, that
  is a second or subsequent RCE in an application
  family will require a petition and showing.

37
Request for Continued Examination 37 CFR 1.114

• Applicant may file one RCE in an application
  family on or after November 1, 2007, without a
  petition and showing. For example

C
C
I
R
November 1, 2007
38
Request for Continued Examination 37 CFR 1.114

• Applicant may file a second or subsequent RCE in
  an application family on or after November 1,
  2007, with a petition and showing. For example

P
R
C
C
I
November 1, 2007
39
Examination of Claims 37 CFR 1.75(b)

• The rule changes to examination of claims
  practice under 1.75 are applicable to
• Applications filed on or after November 1, 2007
  
• Applications entering the national stage on or
  after November 1, 2007 and
• Applications in which a FAOM was not mailed
  before November 1, 2007.
• For example, applicant is required to file an ESD
  in an application that contains more than 5/25
  claims if a FAOM was not mailed before November
  1, 2007.
• Including reissue applications, but not
  reexamination proceedings.

40
Examination of Claims 37 CFR 1.75(b)

• An ESD will not be required in a reissue
  application if the reissue application does not
  seek to change the claims in the patent being
  reissued.
• A change in the claims in the patent being
  reissued is sought either by
• An amendment to a claim or addition of a claim
  or
• An amendment to the specification which changes a
  claim.

41
Applications Containing Patentably Indistinct
Claims - 37 CFR 1.78(f)

• The rule changes to 1.78(f) are applicable to
• Applications pending on or after November 1,
  2007.
• For applications filed before November 1, 2007,
• Applicant must comply with the requirements under
  1.78(f)(1) and 1.78(f)(2)
• Within the time periods set forth in
  1.78(f)(1) and 1.78(f)(2) or
• By February 1, 2008, whichever is later.

42

• Continuing Applications and Requests for
  Continued Examination
• 37 CFR 1.78 and 1.114

43
Continuing Applications37 CFR 1.78(a)(1)

• A continuing application is a nonprovisional
  application (or an international application
  designating the U.S.) that claims the benefit
  under 35 U.S.C. 120, 121, or 365(c) of a
  prior-filed nonprovisional application (or
  international application designating the US).
• A continuing application can be
• A divisional application
• A continuation application or
• A continuation-in-part (CIP) application.

44
Continuing Applications37 CFR 1.78(a)(2)

• A divisional application is a continuing
  application that
• Discloses and claims only an invention(s) that
  was disclosed and claimed in a prior-filed
  application, but
• Was subject to a requirement for restriction in
  the prior-filed application, and
• Was not elected for examination and was not
  examined in any prior-filed application. See
  also 1.78(d)(1)(ii).

45
Continuing Applications37 CFR 1.78(a)(3) and
(a)(4)

• A continuation application is a continuing
  application that discloses and claims only an
  invention(s) that was disclosed in the
  prior-filed application.
• A CIP application is a continuing application
  that discloses subject matter that was not
  disclosed in the prior-filed application.

46
Continuing Applications 37 CFR 1.78(a)

• Applicants may file a voluntary divisional
  application as a continuation application, if the
  prior-filed application is not subject to a
  restriction requirement.
• Applicant may file 2 continuation or CIP
  applications plus a RCE in an application family
  without a petition and showing.
• Applicant may also file a suggested requirement
  for restriction (SRR) in the prior-filed
  application if there are claims to two or more
  inventions.

47
Continuing Applications 37 CFR 1.78(d)

• Any benefit claim to a prior-filed nonprovisional
  application must satisfy at least one of the
  paragraphs in 1.78(d)(1)

1.78(d)(1)(i) 1.78(d)(1)(ii)
1.78(d)(1)(iii) 1.78(d)(1)(iv)
1.78(d)(1)(v) 1.78(d)(1)(vi)

• Conditions for 2 CONs or CIPs of an initial
  application.
• Conditions for divisional applications.
• Conditions for 2 CONs of a divisional
  application.
• Conditions for an extra CON or CIP of an
  international application in which a Demand and
  the basic national fee have not been filed.
• Conditions for an extra CON or CIP for a
  nonprovisional application abandoned in
  preexamination.
• Conditions for a third or subsequent CON or CIP
  filed with a petition and showing.

48
Continuing Applications 37 CFR 1.78(d)

• If applicant presents a benefit claim that is not
  permitted by 1.78(d)(1)
• The Office will refuse to enter the improper
  benefit claim and refuse the benefit of the
  filing date of the prior-filed application.
• The application will be treated as entitled only
  to the actual filing date and will be subject to
  prior art based on the actual filing date of the
  application.
• For example, if the prior-filed application is
  published more than 1 year prior to the actual
  filing date of the application, the publication
  can be used as prior art under 35 USC 102(b).

49
Continuing Applications 37 CFR 1.78(d)(3)

• Applicant must identify the claims in a CIP
  application that are supported by the prior-filed
  application.
• Any claims that are not identified will be
  subject to prior art based on the actual filing
  date of the CIP application.
• A new ground of rejection necessitated by a late
  submission of such an identification will not
  preclude a second or subsequent action from being
  made final.
• The examiner may require applicant to identify
  where (by page and line or paragraph number) the
  specification of the application or the
  prior-filed application provides support and
  enablement for a claim. See 1.105(a)(1)(ix).

50
Continuing Applications 37 CFR 1.78(d)

• Applicant may request to have a continuation
  application placed on an examiners amended
  (Regular Amended) docket under the optional
  streamlined continuation application procedure,
  if
• The continuation application is complete
  including a specification, at least one claim,
  and drawings (if required), and is filed on or
  after November 1, 2007
• The application discloses and claims only an
  invention(s) that was disclosed and claimed in
  the prior-filed application
• The applicant agrees that any election in
  response to a restriction requirement carries
  over to the continuation application
• The prior-filed application is under final or
  appeal and
• The prior-filed application is expressly
  abandoned upon filing of the continuation
  application.

51
Continuing Applications 37 CFR 1.78(d)

• Applicant cannot rely upon a restriction
  requirement to file a divisional application in
  the following situations
• Applicant traverses the restriction requirement
• The restriction requirement is provisional, such
  as a requirement for election of species in an
  application that contains a claim that is generic
  to all of the claimed species (see MPEP 809) and
• The claims to the non-elected invention may be
  rejoined at the request of the applicant (see
  MPEP 821.04 et seq.).

52
Continuing Applications 37 CFR 1.78(d)

• When a restriction requirement is withdrawn in
  these situations, any divisional application that
  has been filed as a result of the restriction
  requirement will not be proper under
  1.78(a)(2) and 1.78(d)(1)(ii).
• Applicant may delete the benefit claim or change
  the benefit claim, if appropriate (e.g., to a
  continuation or CIP application if conditions
  under 1.78(d)(1)(i) are satisfied).

53
Continuing Applications 37 CFR 1.78(d)

• For an application that contains a generic claim,
  
• Applicant should conclude prosecution of the
  generic claim in the initial application and its
  continuation or CIP applications, including
  exhaustion of any available appeals, before
  filing a divisional application to a non-elected
  species.
• For an application that contains withdrawn claims
  that could be rejoined under the rejoinder
  practice,
• Applicant should cancel the withdrawn claims
  before filing a divisional application to the
  non-elected invention.

54
Continuing Applications 37 CFR 1.78(d)

• Applicant also cannot rely upon the restriction
  requirement in these situations to avoid the
  requirement of an ESD.
• The reinstated or rejoined claims will be taken
  into account in determining whether the
  application exceeds the 5/25 claim threshold.
  See 1.75(b)(5).
• For example, if the application exceeds the 5/25
  claim threshold after the withdrawn claims are
  reinstated or rejoined and an ESD was not filed
  before FAOM, the Office will notify applicant and
  require applicant to amend the application such
  that it contains no more than 5/25 claims.

55
Continuing Applications 37 CFR 1.78(d)(1)(iv)

• Applicant may file an extra continuation or CIP
  application without a petition and showing, if
  the following conditions are satisfied
• The prior-filed application is an international
  application designating the US
• A Demand has not been filed and the basic
  national fee has not been paid in the prior-filed
  application and
• The prior-filed application does not claim any
  benefit of any other nonprovisional application
  or international application designating the US.

56
Continuing Applications 37 CFR 1.78(d)(1)(v)

• Applicant may file an extra continuation or CIP
  application without a petition and showing, if
  the following conditions are satisfied
• The prior-filed application is an application
  under 35 USC 111(a)
• The prior-filed application became abandoned due
  to the failure to timely reply to an Office
  notice issued under 1.53(f) (e.g., a notice to
  file missing parts)
• The prior-filed application does not claim any
  benefit of any other nonprovisional application
  or international application designating the US.

57
Petition and Showing37 CFR 1.78(d)(1)(vi) and
1.114(g)

• Applicant may file a third or subsequent
  continuation or CIP application or a second or
  subsequent RCE if applicant files
• A petition in compliance with 1.78(d)(1)(vi) or
  1.114(g)
• The petition fee set forth in 1.17(f)
• An amendment, argument, or evidence and
• A showing that the amendment, argument, or
  evidence sought to be entered could not have been
  submitted during the prosecution of the
  prior-filed application, or prior to the close of
  prosecution in the application.
• Note An amendment, argument, or evidence
  includes any new claims in a continuing
  application, but not an IDS.

58
Petition and Showing37 CFR 1.78(d)(1)(vi) and
1.114(g)

• The petitions will be decided on a case-by-case
  basis as to whether applicants showing is
  sufficient.
• The Office may review the prosecution history of
  the prior-filed application(s) or require
  additional information.
• The Office may also consider the following
  factors
• Whether applicant should file an appeal or a
  petition under 1.181 rather than a continuing
  application or an RCE.
• The number of applications filed in parallel or
  in series with substantially identical
  disclosures and
• Whether the amendment, argument, or evidence was
  submitted with reasonable diligence.

59

• Examination of Claims
• 37 CFR 1.75(b)

60
Examination of Claims 37 CFR 1.75(b)

• Applicants may present, without an examination
  support document (ESD), up to
• 5 independent claims, and
• 25 total claims in an application.
• Applicant may present more than 5/25 claims, if
  applicant files an ESD in compliance with 1.265
  before a FAOM.

61
Examination of Claims 37 CFR 1.75(b)

• If an ESD in compliance with 1.265 is not filed
  before FAOM, the application must remain at 5/25
  or fewer claims.
• In determining whether an application exceeds the
  5/25 claim threshold
• Withdrawn claims are not taken into account,
  unless they are reinstated or rejoined (
  1.75(b)(5)) but
• Claims of other commonly owned applications
  having a patentably indistinct claim will be
  taken into account (not just the patentably
  indistinct claims) ( 1.75(b)(4)).

62
Examination of Claims 37 CFR 1.75(b)

• If an application contains claims to more than
  one invention, applicants may file a suggested
  requirement for restriction (SRR) under
  1.142(c).
• Any SRR must be
• Accompanied by an election without traverse of an
  invention to no more than 5/25 claims,
  identifying the elected claims and
• Filed before the earlier of a FAOM or restriction
  requirement.
• Once the Office issues a restriction requirement,
  applicant may not simply submit an alternative
  SRR.

63
Examination of Claims 37 CFR 1.75(b)

• If the SRR is accepted,
• The claims to the non-elected invention(s) will
  be withdrawn
• The claims to the elected invention will be
  examined and
• The FAOM will set out the restriction
  requirement,
• In a manner similar to a restriction requirement
  previously made by telephone (see MPEP 810).
• Note Excess claims fees cannot be refunded for
  withdrawn claims that are not canceled prior to
  FAOM. See 35 USC 41(a)(2).

64
Examination of Claims 37 CFR 1.75(b)

• If a SRR is not accepted in an application
  containing more than 5/25 claims, the applicant
  will be notified.
• The examiner may make either no restriction
  requirement or a different restriction
  requirement.
• If the examiner does not make a restriction
  requirement,
• The notice will provide a two-month time period
  that is not extendable under 1.136(a).
• To avoid abandonment, the applicant must
• File an ESD in compliance with 1.265 or
• Amend the application to contain no more than
  5/25 claims.

65
Examination of Claims 37 CFR 1.75(b)

• If the examiner makes a different restriction
  requirement,
• The notice will provide a two-month time period
  that is not extendable under 1.136(a).
• Applicant must make an election to avoid
  abandonment.
• If the elected invention is drawn to more than
  5/25 claims, applicant must also
• File an ESD in compliance with 1.265 that
  covers each elected claim or
• Amend the application to contain no more than
  5/25 claims to the elected invention.

66
Examination of Claims 37 CFR 1.75(b)(3)

• Applicant will be notified if
• The application contains more than 5/25 claims
• An ESD has been inadvertently omitted
• A SRR is not filed and
• It is before FAOM.

67
Examination of Claims 37 CFR 1.75(b)(3)

• For applications filed (or that entered the
  national stage) on or after November 1, 2007 and
  that contain more than 5/25 claims without an
  ESD, applicant will be notified
• The notice will set a two-month time period that
  is not extendable under 1.136(a).
• To avoid abandonment, applicant must
• File an ESD in compliance with 1.265 or
• Amend the application to contain no more than
  5/25 claims.

67
68
Examination of Claims 72 Fed. Reg. 46728

• For applications in which a FAOM was not mailed
  before November 1, 2007 and that contain more
  than 5/25 claims without an ESD
• The notice will set a two-month time period that
  is extendable under 1.136(a), up to maximum of
  six months.
• To avoid abandonment, applicant must
• File a SRR
• File an ESD in compliance with 1.265 or
• Amend the application to contain no more than
  5/25 claims.

69
Examination of Claims 37 CFR 1.75(b)(3)

• For applications in which a FAOM was not mailed
  before November 1, 2007 and that contain more
  than 5/25 claims without an ESD (continued)
• The notice may be combined with a restriction
  requirement.
• To avoid abandonment, applicant must make an
  election.
• If the elected invention is drawn to more than
  5/25 claims, applicant must also
• File an ESD in compliance with 1.265 that
  covers each elected claim or
• Amend the application to contain no more than
  5/25 claims to the elected invention.

70
Examination of Claims 37 CFR 1.75(b)

• If an ESD in compliance with 1.265 was not
  filed before FAOM, an amendment that results in
  the application containing more than 5/25 claims
  will be treated as non-responsive.
• The notice will set a two-month time period that
  is not extendable under 1.136(a).
• To avoid abandonment, applicant must file an
  amendment that does not result in the application
  containing more than 5/25 claims.

71
Examination of Claims 37 CFR 1.75(b)(4)

• For commonly owned applications containing at
  least one patentably indistinct claim (that is
  not a withdrawn claim),
• The Office will treat each application as having
  the total number of claims present in all of the
  applications (and not just the claim that is
  patentably indistinct), for the purposes of
  determining whether each application exceeds the
  5/25 claim threshold.

72
Examination of Claims 37 CFR 1.75(b)(4)

• For example, applications A and B are
  commonly owned and each contains 3/20 claims.
• If application A contains a claim that is
  patentably indistinct from the claims in
  application B,
• The Office will treat each application as having
  6/40 claims.
• In response to a notice under 1.75(b),
  applicant must
• Cancel the patentably indistinct claim(s) from
  all but one application
• File an ESD before FAOM in applications A and
  B or
• Amend the application(s) such that both
  applications taken together contain no more than
  5/25 claims.

73
Examination of Claims 37 CFR 1.75(b)(4)

• The Office will treat the application as no
  longer pending for purposes of 1.75(b)(4) if
• A notice of allowance is issued
• The application is recognized as abandoned
• A notice of appeal to the U.S. Court of Appeals
  for the Federal Circuit under 35 USC 141 is
  filed or
• A civil action under 35 USC 145 or 146 is
  commenced.

74
Examination of Claims 37 CFR 1.75(b)

• A dependent claim must
• Be in dependent form
• Refer back to another claim(s) in the same
  application
• Incorporate by reference all the limitations of
  the previous claim to which it refers and
• Specify a further limitation of the subject
  matter of the previous claim.

75
Examination of Claims 37 CFR 1.75(b)(2)

• For determining whether an application exceeds
  the 5/25 claim threshold and for claims fees
  calculation purposes,
• A claim that does not incorporate by reference
  all the limitations of the claim to which it
  refers will be treated as an independent claim.
• A claim that refers to a claim of a different
  statutory class of invention will also be treated
  as an independent claim.
• For example, a method of using the composition
  of claim 1 comprising.

76
Examination of Claims 37 CFR 1.75(b)(4)

• For determining whether an application exceeds
  the 5/25 claim threshold and for claims fees
  calculation purposes (continued),
• A multiple dependent claim will be considered to
  be that number of claims to which direct
  reference is made therein.
• A claim depending from a multiple dependent claim
  will be considered to be that number of claims to
  which direct reference is made in that multiple
  dependent claim.
• In the following example, each claim will be
  considered to be 3 claims
• Claim 4. A device according to claim 1, 2, or 3,
  further comprising
• Claim 5. A device according to claim 4, further
  comprising

77

• Examination Support Documents (ESD)
• 37 CFR 1.265

78
Examination Support Document 37 CFR 1.265

• If applicant presents more than 5/25 claims in an
  application, an ESD in compliance with 1.265 is
  required before FAOM.
• The information will assist the examiner in the
  determination of the patentability of the claims,
  such as
• Determining the effective filing date of each
  claim
• Interpreting the claims before a prior art
  search and
• Understanding the invention, the state of the
  art, and the most closely related prior art cited
  by the applicant.

79
Examination Support Document 37 CFR 1.265(a)

• An ESD must include
• A preexamination search statement
• Listing of references deemed most closely related
  to the subject matter of each claim
• Identification of claim limitations disclosed by
  each reference
• Detailed explanation of patentability and
• Showing of support under 35 USC 112, 1.

80
Examination Support Document 37 CFR 1.265(a)(1)
and (b)

• A preexamination search statement must include
• A statement that a preexamination search in
  compliance with 1.265(b) was conducted.
• An identification of
• The field of search by US class and subclass, the
  date of the search and
• For database searches, the search logic or
  chemical structure or sequence used as a query,
  the name of the file(s) searched and the database
  service, and the date of the search (in the
  manner set forth in MPEP 719.05.)

81
Examination Support Document 37 CFR 1.265(a)(1)
and (b)

• A preexamination search under 1.265(b) must
• Be directed to the claimed invention and
• Encompass all of the limitations of each of the
  claims, giving the claims the broadest reasonable
  interpretation.

82
Examination Support Document 37 CFR 1.265(a)(1)
and (b)

• The preexamination search must encompass all the
  limitations of the independent claims and the
  dependent claims separately from the claim(s)
  from which they depend.
• For example, if independent claim 1 recites
  elements A, B, and C, and dependent claim 2
  recites element D, even if applicant cannot
  find one of the elements A, B, and C,
  applicant must still search for element D.

83
Examination Support Document 37 CFR 1.265(a)(1)
and (b)

• The preexamination search must involve
• U.S. patents and patent application publications
• Foreign patent documents and
• Non-patent literature.
• These sources cannot be eliminated,
• Unless the applicant justifies with reasonable
  certainty that no references more pertinent than
  those already identified are likely to be found
  in the eliminated source.
• The justification must be included in the
  preexamination search statement.

84
Examination Support Document 37 CFR 1.265(a)(2)
and (c)

• The listing of references must include
• A list identifying each cited reference in
  compliance with 1.265(c)(1) and (c)(2)
• A legible copy of each cited reference, except
  for U.S. patents and patent application
  publications and
• Any existing English language translation of each
  cited non-English language reference.

85
Examination Support Document 37 CFR 1.265(a)(2)

• The references that would be most closely related
  to the subject matter of each claim include any
  reference that discloses
• The greatest number of limitations in an
  independent claim
• A limitation of an independent claim that is not
  shown in any other reference or
• A limitation of a dependent claim that is not
  shown in any other reference.
• Applicant must consider all of the references
  that applicant has knowledge of, regardless of
  the source.

86
Examination Support Document37 CFR 1.265(a)(3)

• To identify all of the claim limitations that are
  disclosed by each reference, applicant may map
  the limitations of each claim to the reference.
• For each claim, identifying where the cited
  reference discloses a feature(s), showing(s) or
  teaching(s) that is relevant to each limitation
  of such claim.

86
87
Examination Support Document37 CFR 1.265(a)(3)

• Applicant must identify at least one appearance
  in the reference of a specific feature, showing,
  or teaching for which the reference is being
  cited.
• Applicant would not need to specifically point
  out more than one occurrence.
• However, applicant should do so where the
  additional appearance may not be apparent and may
  have some additional significance.

87
88
Examination Support Document37 CFR 1.265(a)(3)

• If applicant recognizes that a reference is
  relevant for more than one feature, showing, or
  teaching, the applicant would need to
  specifically identify
• Each additional feature, showing, or teaching
  and
• The portion where the feature, showing, or
  teaching appears in the document.
• A mere statement indicating that the entire
  reference, or substantially the entire reference,
  is relevant would not be sufficient.

88
89
Examination Support Document 37 CFR 1.265(a)(4)

• The ESD must include a detailed explanation that
  particularly points out how each of the
  independent claims is patentable over the
  references cited in the listing of references.
• Applicant must set out with particularity, by
  reference to one or more specific claim
  limitations, why the claimed subject matter is
  not described in the references, taken as a
  whole.
• A general statement that all of the claim
  limitations are not described in a single
  reference will not be sufficient.

90
Examination Support Document 37 CFR 1.265(a)(4)

• Applicant must explain why a person of ordinary
  skill in the art would not have combined the
  references to arrive at the claimed subject
  matter.
• The applicant must also explain why the claim
  limitations referenced render the claimed subject
  matter novel and non-obvious over the cited prior
  art.

91
Examination Support Document 37 CFR 1.265(a)(5)

• An ESD must include a showing of where each
  limitation of the claims finds support under 35
  USC 112, 1, in the written description of the
  specification.
• If the application claims the benefit of a
  prior-filed application(s), the showing must also
  include where each claim limitation finds support
  in each such application.
• Applicant must identify each means- (or step-)
  plus-function limitation and the corresponding
  structure, material, or acts.

92
Examination Support Document 37 CFR 1.265(d)

• A supplemental ESD is required
• When applicant presents an amendment to the
  claims that is not encompassed by the previous
  ESD and
• When applicant files an IDS that includes a
  reference that is deemed as closely, or more
  closely, related to the subject matter of at
  least one claim than the references provided in
  the previous ESD.

93
Examination Support Document 37 CFR 1.265(e)

• Applicant will be notified if
• The ESD or preexamination search is deemed to be
  insufficient or
• The claims have been amended such that the ESD no
  longer covers each claim.

94
Examination Support Document 37 CFR 1.265(e)

• The notice will provide a two-month time period
  that is not extendable under 1.136(a).
• To avoid abandonment, the applicant must within
  the time period either
• File a corrected or supplemental ESD or
• Amend the application such that it contains no
  more than 5/25 claims.

95
Examination Support Document 37 CFR 1.265(f)

• If an ESD is accompanied by a certification under
  1.265(f), the ESD is not required to include an
  identification of claim limitations disclosed by
  each reference under 1.265(a)(3).
• This exemption applies only to applications filed
  by a small entity as defined by the Regulatory
  Flexibility Act (5 USC 601 et seq.).
• Questions related to whether an entity meets this
  definition may be directed to the Small Business
  Administration.
• An entity that meets the definition of a small
  entity set forth in 1.27 for paying reduced
  fees may or may not meet this definition.

96

• Patent Applications Containing Patentably
  Indistinct Claims
• 37 CFR 1.78(f)

97
Identification of Other Applications37 CFR
1.78(f)(1)(i)

• Applicant must identify other commonly owned
  application(s) or patent(s) that has
• An inventor in common with the application and
• A claimed filing or priority date within two
  months of the claimed filing or priority date of
  the application taking into account the actual
  filing date, any foreign priority date, and
  filing date of a prior-filed provisional or
  nonprovisional application for which a benefit is
  claimed.

98
Identification of Other Applications37 CFR
1.78(f)(1)(i)

• For example, if application A and application
  B are commonly owned, have at least one common
  inventor, and claim the benefit of the same
  prior-filed nonprovisional application,
• Applicant for application A must identify
  application B and
• Applicant for application B must identify
  application A.

99
Identification of Other Applications 37 CFR
1.78(f)(1)(i)

• For the example below, applicant for application
  A is required to identify application B and
  applicant for application B is required to
  identify application A because the foreign
  priority date of application A is within two
  months from the filing date of a prior-filed
  nonprovisional application for which benefit is
  claimed in application B.

Actual FD
Foreign FD
Application A
FD of a prior-filed nonprovisional app.
FD of a prior-filed provisional app.
Actual FD
Application B
2 months
100
Identification of Other Applications37 CFR
1.78(f)(1)(ii)

• Applicant must submit the identification of other
  commonly owned applications or patents within the
  later of
• Four months from the actual filing date of the
  application or from the date on which the
  national stage commenced or
• Two months from the mailing date of the initial
  filing receipt in the other application.

101
Applications Containing Patentably Indistinct
Claims - 37 CFR 1.78(f)(2)(i)

• A rebuttable presumption will exist that the
  application and the other commonly owned
  application(s) or patent(s) contain at least one
  patentably indistinct claim,
• If the other application or patent has
• An inventor in common with the application
• A claimed filing or priority date that is the
  same as the claimed filing or priority date of
  the application and
• Substantial overlapping disclosure with the
  application.
• Substantial overlapping disclosure exists if the
  other application or patent has support for at
  least one claim in the application.

102
Applications Containing Patentably Indistinct
Claims - 37 CFR 1.78(f)(2)(ii)

• If the rebuttable presumption under 1.78(f)(2)
  exists, applicant must either
• Rebut the presumption by explaining how the
  application contains only patentably distinct
  claims or
• Submit a terminal disclaimer.
• If the other application is pending, applicant
  must also explain why there are two or more
  pending applications which contain patentably
  indistinct claims.

103
Applications Containing Patentably Indistinct
Claims - 37 CFR 1.78(f)(2)(iii)

• If the rebuttable presumption under
  1.78(f)(2)(i) exists, applicant must submit a
  rebuttal or a terminal disclaimer within the
  later of
• Four months from the actual filing date of the
  application or from the date on which the
  national stage commenced
• The date on which a patentably indistinct claim
  is presented or
• Two months from the mailing date of the initial
  filing receipt in the other application.

104
Applications Containing Patentably Indistinct
Claims - 37 CFR 1.78(f)(3)

• For commonly owned pending applications that
  contain at least one patentably indistinct claim,
  
• The Office will treat each application as having
  the total number of claims present in all of the
  applications for the purposes of determining
  whether each application exceeds the 5/25 claim
  threshold. See 1.75(b)(4).
• In the absence of good and sufficient reason, the
  Office may require elimination of the patentably
  indistinct claims from all but one of the
  applications.

105

• Refund of Excess Claims Fees
• 37 CFR 1.117

106
Refund of Excess Claims Fees37 CFR 1.117

• Applicants may request a refund of any excess
  claims fees paid on or after December 8, 2004 for
  a claim
• If the amendment canceling the claim is filed
  before an examination on the merits has been made
  of the application.
• The amendment must be filed at least one day
  before a FAOM, notice of allowability or
  allowance, or action under Ex parte Quayle is
  shown in the PALM system as having been counted.
• Certificate of mailing or transmission under
  1.8 will not be taken into account.

107
Refund of Excess Claims Fees37 CFR 1.117

• The request for refund must be filed within two
  months from the filing of the amendment canceling
  the claim.
• This time period is not extendable.
• The Office will not refund any excess claims fee
  paid for a withdrawn claim that is not canceled
  before FAOM.
• The Consolidated Appropriations Act authorizes a
  refund only for a claim that has been canceled
  before an examination on the merits has been made
  of the application under 35 USC 131.

108

• Patent Term Adjustment (PTA)
• 37 CFR 1.704

109
Patent Term Adjustment (PTA)37 CFR 1.704

• A failure to comply with 1.75(b) in an
  application will cause a reduction of any PTA.
• Example 1 In an application that contains more
  than 5/25 claims and no ESD (and no SRR),
  applicant did not file an ESD until after four
  months from the filing date of the application.
• Example 2 In an application in which an ESD
  was not filed before FAOM, applicant filed an
  amendment resulting in the application containing
  more than 5/25 claims.

110
Patent Term Adjustment37 CFR 1.704

• Any PTA will be reduced by the number of days
  beginning on the day after the date that is the
  later of
• The filing date of the amendment resulting in the
  noncompliance with 1.75(b)
• Four months from the filing date of the
  application or
• Four months from the date on which the national
  stage commenced.

111
Patent Term Adjustment37 CFR 1.704

• Any PTA will be reduced by the number of days
  ending on the filing date of
• An ESD in compliance with 1.265
• An election of an invention in response to a
  restriction requirement that is drawn to no more
  than 5/25 claims
• An amendment resulting in the application
  containing no more than 5/25 claims or
• A SRR accompanied by an election of an invention
  that is drawn to no more than 5/25 claims.

112
More Information

• For more information,
• Please visit the USPTO web site at
  http//www.uspto.gov/web/offices/pac/dapp/opla/pre
  sentation/clmcontfinalrule.html or
• Contact the Office of Patent Legal Administration
  at [phone] or e-mail to PatentPractice_at_uspt
  o.gov.

113

• Thank you !!